Malawi: Malawi accedes to Madrid Protocol and prepares to implement new legislation

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19 October 2018

Malawi deposited its instrument of accession to the Madrid Protocol on September 25 2018, and the country will formally become a member of the international trade mark registration system on December 25 2018. Malawi has also posted the necessary declarations to make it clear that the refusal period will be 18 months, that mere intention to use is sufficient, and that the recording of licences in the international register has no effect in Malawi.

Malawi is a country that needs to specifically incorporate international treaties into national law before they become effective. There is no mention of the Madrid Protocol or International Registrations (IRs) in present trade mark legislation, the Trade Marks Act of 1958. There is, however, extensive reference to international trade mark issues – under the Madrid Protocol as well as the ARIPO trade mark system – in draft new trade mark legislation that was published a year ago. This draft legislation, the Trademarks Bill 2017, will replace the current legislation in its entirety.

We understand that the Trademarks Bill 2017 will come into force soon, but there is no definite date. Assuming that it becomes law on or before December 25 2018, all IRs designating Malawi should be valid and enforceable in Malawi. If there is a delay in the implementation of the new law, however, there might be a period during which it is risky to file IRs in Malawi. We will monitor the situation closely and report on developments.

In addition to making provision for IRs, the Trademarks Bill 2017 will modernise trade mark law in Malawi in a number of ways. For example, there will in future be a wider definition of the term trade mark, there will be scope for protecting service marks, there will be broader enforcement rights, there will be criminal offences for trade mark infringement, and there will be provision for actions based on unfair competition. We understand that initially the regulations that apply to the existing law will apply to the new law, but that, eventually, new regulations will be promulgated.